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Makati City, Philippines (PH)

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01-11-2017 (Newsletter Issue 1/17)
Structure of Official Fees Revised Soon
The Philippine Intellectual Property Office (IPOPHL) will increase its official fees in order to rationalise and streamline its fee structure to make adjustments in order to address inflation and rising operational costs and expenses, as well as to support additional mandates and services, and other developmental programs/projects and advocacies; and further to reduce or abolish redundant fees.

The new official fee for filing a trademark application will be PHP 1,200 for small entities and PHP 2,592 for big entities per each class. The publication fee will be PHP 900 for small entities and PHP 960 for big entities.

'Big entity' is any natural or juridical persone whose assets are worth more than one hundred million Pesos or any natural or juridical person which do not fall under the catecory of a small entity. 'Small entity' refers to any natural or juridical person whose assets are worth not more than one hundred million Pesos or any entity, agency, office, bureau or unit of the Philippine government including government-owned or controlled coroporations, state universities and colleges and government-owned or government-run schools.

The revised fee structure will be effective January 1, 2017.

For more information, please click here

Source: Platon Martinez Flores San Pedro & Leaño, The Philippines


11-25-2015 (Newsletter Issue 18/15)
Trademark Forms Updated
The Intellectual Property Office of the Philippines (IPOPHIL) informed that the trademark forms have been updated. Old trademarks forms have been accepted until November 6, 2015.

The following forms have been updated:

- Trademark Application Form (IPOPHL-SOP-BOT-01-F01)
- Declaration of Actual Use (IPOPHL-SOP-BOT-01-F02)
- Request for Transformation of an International Registration into a National Application Form (IPOPHL-SOP-BOT-01-F03)
- Request for Renewal of Registration (IPOPHL-SOP-BOT-01-F04)
- Assignment of Application for Registration of Trademark (IPOPHL-SOP-BOT-01-F05)
- Assignment of a Registered Trademark (IPOPHL-SOP-BOT-01-F06)

Source: www.ipophil.gov.ph


11-25-2015 (Newsletter Issue 18/15)
IP Cases for WIPO Mediation Accepted
The Intellectual Property Office of the Philippines (IPOPHL) is now offering WIPO Mediation for disputes pending before the IPOPHL. In accordance with a Memorandum of Understanding, the IPOPHL and the World Intellectual Property Organization (WIPO) have established a joint dispute resolution procedure for the referral of intellectual property (IP) disputes to the WIPO Arbitration and Mediation Center (WIPO Center).

All cases filed in the IPOPHL primarily involving one or more parties domiciled outside the Philippines can now avail of the WIPO Mediation, specifically:
- Administrative complaints for violation of intellectual property rights (IPV) and/or unfair competition
- Inter partes cases (IPC)
- Disputes involving technology transfer payments
- Disputes relating to the terms of a license involving the author's rights to public
- performance or other communication of his work
- Cases appealed to the Office of the Director General (ODG) from decisions of the Bureau of Legal Affairs (BLA) and the Documentation, Information and Technology Transfer Bureau (DITTB)
- All other cases which may be referred to mediation during the settlement period declared by the Director General

The WIPO Mediation option offered by IPOPHL may be especially advantageous for international parties or parties seeking to settle related disputes in multiple jurisdictions.

Source: www.ipophil.gov.ph


12-03-2013 (Newsletter Issue 17/13)
TM Applications with Priority Claim
On April 5, 2013, the Intellectual Property Office of the Philippines (IPOPHIL) announced that a certified true copy of a priority application is no longer required to prove entitlement to an applicant’s priority claim. Further clarification was issued on October 18, 2013.

The new guidelines are as follows:
1. For applications claiming Paris Convention priority, a certified true copy of the priority application is no
longer required if details of the priority application in the English language are available from the online trademarks database of the foreign IP Office. If the priority application is not in the English language or its details are not available online, a photocopy of the priority application will suffice.

2. It is important that the goods and services stated in the Philippine application be covered or included in the foreign priority application. It is no longer necessary to adopt the specification of goods and services of the foreign priority application verbatim. However, the inclusion of goods and services outside those of the foreign priority application may lead to an office action.

3. Applicants are invited to pay the allowance fees within six months from the mailing date of the Notice of Allowance. An extension of one year may be granted if necessary. If no payment is received by IPOPHIL, the application will be abandoned. In the event that the application is abandoned for failure to pay the allowance fees, a revival may be filed, but the claim for Convention priority will be automatically waived.

4. Once the foreign application is registered, the applicant shall inform IPOPHL. A photocopy of the priority registration will suffice if the foreign IP Office does not have an online database in the English language.

All pending applications as of May 2013 are covered by the new guidelines except those subject to Provisional Allowance (first or second provisional allowance) and those with pending requests for Provisional Allowance under the old Trademark Rule No. 168.

Source: INTA Bulletin, Vol. 68 No. 21, Patrick mirandah co., philippines, inc., Taguig
Verified by Diageo Philippines, Inc., Taguig


07-01-2013 (Newsletter Issue 10/13)
Declaration of Use of IR Required
The Philippines has notified the WIPO that holders of international registrations containing a designation of the Philippines must file declarations of actual use of the mark with evidence to that effect.

Such declarations must be filed directly with the Office of the Philippines, as prescribed by the applicable laws and regulations and upon payment of a fee:
- Within a three year period, counted from the date of the international registration or the date of the recordal of the subsequent designation of the Philippines. A one-time six month extension of the three-year period to file the aforementioned declaration may be requested, provided that such request is filed before the expiry of the said period;
- Within a one-year period, following five years counted from the date on which protection was granted in the Philippines, as indicated in the statement sent by the Office of the Philippines to the International Bureau under either Rule 18ter(1) or (2) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement;
- Within a one-year period, following five years counted from the date of each renewal of the international registration.

Alternately, within the aforementioned periods, holders may file, directly with the Office of the Philippines, in the manner prescribed by the applicable laws and regulations and upon payment of a fee, a declaration of non-use of the mark, stating the valid grounds, under the laws of the Philippines, for such non-use.

The declaration of actual use or non-use of the mark must be submitted by the holder’s authorized representative with a local address or by a legal representative in the Philippines. A local address is required for purposes of notification.

Failure to file declarations of either actual use or non-use of the mark, within the applicable periods, will prompt the Office of the Philippines to declare, ex officio, that protection to the mark which is the subject of an international registration containing a designation of the Philippines cannot or can no longer be granted.

Source: www.wipo.int


09-02-2012 (Newsletter Issue 13/12)
Examination of Applications Remain the Same
The Intellectual Property Office of the Philippines (IPOPHL) has announced that there will be no difference in the substantive examination of applications received by way of Madrid Protocol or by way of national application. In other words, the applications will be examined in the chronology by which they are received and no preference will be given to one type of application over the other.

Moreover, international registrations extending to the Philippines will also be subject to the requirements of a Declaration of Actual Use (DAU). The DAU and the corresponding fees have to be filed with IPOPHL through a resident agent.

Source: patrick mirandah co, Philippines


07-31-2012 (Newsletter Issue 12/12)
Accession to the Madrid Protocol Now Effective
The Madrid Protocol has become effective in the Philippines on 25 July 2012. It is now possible to file for international registration of trademarks.

Source: www.ipophil.gov.ph


05-29-2012 (Newsletter Issue 9/12)
Accession to the Madrid Protocol
Philippine trademark holders and applicants can now file more easily trademark applications in more than 80 countries after President Benigno Aquino III signed the Instrument of Accession of the Philippines to the Madrid Protocol on 25 April 2012. Madrid Protocol operations in IPOPHL will commence on 25 July 2012.

Currently, a Philippine trademark holder seeking protection abroad has to apply separately in every country of interest. This involves different application forms, languages and payments in different currencies.

The Madrid Protocol will provide a cost-effect, centralized procedure that will allow a trademark owner to obtain protection for its mark in different countries by filing one international application in the Intellectual Property Office of the Philippines (“IPOPHL”).

Source: Bengzon Negre Untalan Intellectual Property Attorneys, Philippines


RA 8293 entitled “Intellectual Property Code of the Philippines” was enacted on January 1st, 1998 and codifies the Philippine Laws on IP conformably with the WTO-TRIPS Agreement. It created the Intellectual Property Office (IPO) and repealed old IP and IP-related laws, insofar as the same are inconsistent with RA 8293, as for example RA 166 of June 29th, 1947.
The Philippines adhered to the Madrid Protocol effective July 25, 2012.
Trademark protection is obtained either by registration or local use prior to January 1st, 1998. Under RA 166, the trademark law in force before RA 8293, registration was merely a right or prerogative of the trademark owner, and was not a prerequisite to the enjoyment of rights. The passage of RA 8293 did not impair trademark rights arising from local use under RA 166.
Nice classification, 10th edition
Registrable as a trademark is any visible sign capable of distinguishing a good (trademarks) or service (service marks of an enterprise) and shall include a stamped or marked container of goods. Registrable marks are considered to be words, names, letters, numerals or devices, 3-D marks, holograms, movement and colours, if defined by a given form. Colours alone is not registrable. Likewise unregistrable are marks that are misleading, contrary to public order or morality, or identical or confusingly similar with a mark that has been registered or with an earlier or priority filing date.
The following trademark types are registrable: trade marks, service marks, collective marks, trade names, and even domain names.
The application is filed at the Bureau of Trademarks at the IPO.
Multiple-class applications are possible.
If a foreign applicant is not domiciled or has no real and effective commercial establishment in the Philippines, he must designate by a written document filed in the IPO, the name and address of a Philippine resident who may receive notices in proceedings affecting the mark.
A signed Power of Attorney is sufficient.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration or first office action is approx. 4 to 12 months.
Prior to registration, the trademark application is published in the weekly official electronic gazette published on the website of the Philippine Intellectual property Office for opposition purposes.
Upon certification by the Director of the Bureau of Legal Affairs that no verified notice of opposition, or motion for extension of time to file the same, has been filed within the opposition period, and upon payment of the required fee, the office shall issue the certificate of registration. The issuance of the certificate of registration shall be published in the IPO gazette and shall be entered on the records of the office.
National:
The opposition period is 30 days from publication date of the application in the eGazette. The period may be extended for two (2) additional thirty (30) day periods, upon motion due to meritorious grounds and payment of the appropriate fees.

Details regarding the Opposition Period against designation of IR Mark are available in our publication on this topic here
A trademark registration is valid for 10 years from the date of registration.
The registration is renewable for periods of 10 years.
The grace period for renewals is 6 months after the expiration date of the trademark.

Further practical details are available in our publication on this topic here
Within 3 years from filing of the trademark application, a declaration and evidence of actual use (DAU) of the mark in Philippine commerce shall be filed, otherwise the trademark is cancelled automatically.
The Guidelines on the Submission of Declaration of Actual Use require the DAU to be submitted without need of notice, in the prescribed format, signed and notarized, together with proofs of actual use (e.g. labels and brochures), within the said period of time. A single extension to file the DAU for 6 months may be filed within this period of time and the actual use of the trademark may be made within the 6 months extension.
To maintain the validity of the registration, declaration and evidence of use of the mark must also be filed within one year from the fifth anniversary of the registration of the mark.


Further practical details are available in our publication on this topic here
As of January 1, 2017, the new official fee for filing a trademark application will be PHP 1,200 for small entities and PHP 2,592 for big entities per each class. The publication fee will be PHP 900 for small entities and PHP 960 for big entities.

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Practical details on licensing procedures, requirements and effectiveness are available in our publication on this topic here.
Search type First class Add. class
Word Mark Search (availability) 380,00 € 280,00 € 
Word Mark Search (identical) 350,00 € 250,00 € 

The Prices above are SMD Group Search Fees
Country Index is a free service of SMD Group. We thank the following law firms for their assistance in updating the information provided.

Country Survey
04-18-2016
Hechanova & Co. Inc., Makati City, Philippines  

08-26-2013
Hechanova & Co. Inc., Makati City, Philippines  

11-15-2012
Platon Martinez Flores San Pedro & Leaño, Makati City, Philippines

11-05-2012
Platon Martinez Flores San Pedro & Leaño, Makati City, Philippines

01-03-2012
CVCLAW Villaraza Cruz Marcelo & Angangco, Manila, Philippines



Hechanova & Co. Inc.



Editha R. Hechanova

Editha R. Hechanova
Ground Floor Salustiana D. Ty Tower, 104 Paseo de Roxas Avenue, Legaspi, Village
1229 Makati City
Philippines (PH)
Tel +63 2 888 4293
Fax +63 2 888 4290
mail@hechanova.com.ph
www.hechanova.com.ph

Hechanova & Co., Inc. was established in December 12, 2005 by intellectual property lawyer Editha Hechanova and friends Fe Belen Bello, a chemical engineer, Dr. Jimmy Masagca, a biologist, and sisters Noemi Rivera, a certified public accountant and Brenda Rivera, an economist and logistics expert. From a group of six professionals, it has grown to twenty specialists and technical staff, with two certified patent agents, having passed the Patent Agent Qualifying Examination (PAQE) conducted by the Intellectual Property Office. The company specializes in the prosecution of patents and trademarks, copyright registration, domain name registration, providing patent and trademark search services, renewal services, customs recordation, registration with the Food and Drug Administration, plant variety protection, and litigation support services. It is affiliated with the law offices of Hechanova Bugay & Vilchez which handle the contentious aspects of intellectual property protection such as enforcements, opposition and cancellation proceedings, litigation, due diligence service, and licensing.

HECHANOVA & CO., INC.
Chemphil Bldg., 851 Antonio Arnaiz Ave.,
Makati City 1223 Philippines
Tel. No.: 632-888-4293/812-6561
Fax No.: 632-888-4290/893-5878
E-mail: mail@hechanova.com.ph

Intellectual Property Office of the Philippines (IPOPHL)
World Finance Plaza Building
#28 Upper McKinley Road
McKinley Hill Town Center
Fort Bonifacio, Taguig City
Metro Manila
1634, Philippines

Tel +63 2 23 86 300
Fax +63 2 75 24 869
Mail mail@ipophil.gov.ph
www.ipophil.gov.ph

World Intellectual Property Organization (WIPO)
34, Chemin des Colombettes
1211 Geneva 20
Switzerland
Tel +41 22 33 89 11 1
Fax +41 22 73 35 42 8
www.wipo.int